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April's advice article

Global Dossier for Worldly Inventors

James Higgins (Extern), Office of Innovation Development

The international market is no stranger to the small business owner. In fact, 97 percent of all U.S.-originating exporters are small businesses[1]. With 95 percent of the world’s consumers outside U.S. borders, many business owners have at one time or another thought about entering the international market. Although entrepreneurs face many challenges, including financial hurdles and complex legal rules, when making the leap abroad, a brand new market of consumers can make the effort worthwhile. Of course, whenever a small business owner expands to a new country, intellectual property protection should be a top priority.

Generally, each country has its own patent system, and patents have effect only in those countries for which they are granted. Because U.S. patents provide protection only in the United States, potential patent owners should file a patent application for their invention in each country they wish to gain protection, which can be especially important when marketing, selling, exporting, or manufacturing inventions internationally. Read more about protecting intellectual property rights overseas.

Historically, slow communication between various countries’ patent offices has hindered the process of obtaining a patent on an international level. The Global Dossier Initiative, launched November 2015, aims to facilitate more efficient access to different patent systems, saving inventors and business owners time and money when expanding to markets abroad.

The “IP5,” comprised of the USPTO, the European Patent Office, the Japan Patent Office, the Korean Intellectual Property Office, and the State Intellectual Property Office of the People’s Republic of China, have collaborated to provide the Global Dossier Initiative. Its purpose is to modernize the global patent prosecution process for both public users and examiners. The Global Dossier portal provides access to information from applications related to the searched patent document filed at participating offices. It allows small business owners to get access in real time to related applications in all IP5 Offices. Recently, the USPTO entered an agreement with the World Intellectual Property Organization (WIPO) to integrate its Centralized Access to Search and Examination (WIPO-CASE) system with Global Dossier. This enhancement expands Global Dossier access to include all international applications filed under the Patent Cooperation Treaty as well as patent applications from WIPO-CASE participating Offices, including the Canadian Intellectual Property Office, the Australian Patent Office, the United Kingdom Intellectual Property Office, and others. A complete list of WIPO participating offices and additional details are available at WIPO-CASE.

Global Dossier not only makes the international filing and prosecution system more efficient for U.S. users and examiners, but also for examiners around the world, especially in terms of improved access to information to the work conducted by other offices on the same invention.

Future development of Global Dossier is intended to progress toward an end goal of cross filing. This process, however, must be cognizant of each country’s legal frameworks and carried out in incremental steps. The level of difficulty to cross file became apparent during one of IP5’s first tests of the Global Dossier: legal and security issues arose when evaluating something simple as an applicant change of address, proving that even a routine task on a domestic scale grows exponentially harder when put on the international stage. Despite these challenges, the IP5 Offices are committed to continuing to collaborate, keeping in mind the varying resources, legal framework, and internal plans of each individual office.

The USPTO strongly believes that higher quality solutions to complex problems are often found through a collective effort of dedicated and invested individuals. In this spirit, the Global Dossier Initiative makes use of the Ideascale platform, a forum where users can post feedback and offer suggestions for the improvement of Global Dossier. Members of the Global Dossier development team visit the forum regularly and often respond to individual suggestions and consider them for implementation. To further involve the public, the Global Dossier team has also used Ideascale to propose new ideas and receive feedback.

The USPTO is always looking to improve the experience of inventors and aspiring business owners. With Global Dossier, inventors in the United States and around the world can set new horizons for their products and businesses. In a globalizing world, the Global Dossier Initiative will help businesses large and small adapt and succeed in new markets by making it easier to quickly view, monitor, and manage their intellectual property.

[1] Patrick Delehanty. Small Businesses Key Player in International Trade, Small Business Association Office of Advocacy Issue Brief, 11. P. 1

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The USPTO gives you useful information and non-legal advice in the areas of patents and trademarks. The patent and trademark statutes and regulations should be consulted before attempting to apply for a patent or register a trademark. These laws and the application process can be complicated. If you have intellectual property that could be patented or registered as a trademark, the use of an attorney or agent who is qualified to represent you in the USPTO is advised.